General Administration of Customs Promulgates New Implementing Rules for Customs Protection of Intellectual Property Rights
State Administration of Industry and Commerce Promulgates Rules for Recognizing Famous Trademarks
New Administrative Measures for Software Products
Update to Approval of Foreign-Invested Enterprises
Taiwan - IP
Internet Service Provider Liability Limitation Bill to Amend the Copyright
Law
Directory of Well-Known Trademarks
CHINA
General Administration of Customs Promulgates New Implementing Rules for Customs Protection of Intellectual Property Rights
On March 3, 2009, the General Administration of Customs ("GAC") promulgated new Implementing Rules for the Customs Protection of Intellectual Property Rights ("Implementing Rules"). The new Implementing Rules will take effect on July 1, 2009, and will replace the old Implementing Rules, promulgated in 2004. There are several major revisions in the new Implementing Rules:
1. The new Rules authorize the GAC to directly contact the shipper to request evidence of its authorization in cases where the GAC finds 1) the imported and exported goods appear to be protected by IPR recorded at the GAC, and 2) the recordation does not show any licensed importer, exporter or manufacturer of the goods.,
2. If the shipper and consignee of the goods fail to provide proof of their authorization to distribute the goods, the GAC will have reason to believe the goods suspected of infringing on recorded IPRs. GAC is authorized to prevent release of the goods and to notify the IPR holder in writing.
3. The new Rules add a provision allowing for settlement between an infringing shipper and an IPR holder. As long as the relevant parties reach agreement and submit a written application to the GAC for releasing the detained goods, the GAC can terminate the investigation. If the GAC considers that the infringement has constituted a crime, it is authorized to refuse to terminate a case.
4. The new Implementing Rules add that the Customs shall solicit the opinions of relevant owners of IPR in advance of auctioning infringed goods. It remains to be seen how this provision will be implemented, and what degree of participation will be afforded to foreign IPR owners.
State Administration of Industry and Commerce Promulgates Rules for Recognizing Famous Trademarks
On April 21, 2009, the State Administration of Industry and Commerce ("SAIC") promulgated the Rules for Recognizing Famous Trademarks ("Rules"), which came into force that same day.
The Rules require that the Trademark Office ("TMO") and the Trademark Review and Adjudication Board ("TRAB") consider the following factors in order to determine if a mark is famous: 1) reputation of a mark among the relevant public; 2) use of the trademark over a continuous period of time; 3) advertisement of the trademark over a continuous period of time, 4) the degree and geographical area of the advertising; 5) any record of protection of the mark as a famous mark in China or other countries; and 6) any other factors that relate to the reputation of the mark worldwide.
The Rules also require that the Central Disciplinary Committee and the Ministry of Supervision supervise the recognition work of the TMO and TRAB, by attending the meetings at which the recognition of a famous mark is discussed and examined. The supervision is intended to prevent or reduce opportunities for corruption to affect the recognition process.
New Administrative Measures for Software Products
On March 5, 2009, the Ministry of Industry and Information Technology ("MIIT") promulgated the Administrative Measures for Software Products ("Administrative Measures"), which came into force on April 10, 2009. The New Administrative Measures replace the old Administrative Measures promulgated in 2000.
The new Administrative Measures differ from the old Administrative Measures in the following ways:
- Upon receipt of an application to register a software product on any designated media, the MIIT is required to publish a public notification to announce the software application. If the an opposition is not filed within 7 working days from the issuance of the public notification, the local software industry authority will approve the software registration application and issue the software product registration number and registration certificate.
- Local software industry authorities are no longer allowed to cancel software product registrations suspected of violations of law, bad faith registration, or which fail to satisfy national technical requirements. Local software industries must now report these suspected improper software registrations to the MIIT, and the MIIT should provide any necessary warnings, publish public notifications, or impose penalties against improper registrations.
- Various clauses restricting the production and distribution of unregistered software products have been deleted in the new Administrative Measures. This may imply that the MIIT is loosening the supervision of unregistered software products.
Update to Approval of Foreign-Invested Enterprises
In March 2009, the Ministry of Commerce ("MOC") announced a Notice on Further Improving the Examination and Approval of Foreign-Investment Enterprises ("Notice"). Taking effect immediately, the Notice simplifies the MOC's examination and approval procedures for foreign-invested enterprise operations. The Notice will make it easier for foreign investors starting new entities in China, and implements many changes, including the following:
- Establishment of a branch of a foreign-invested enterprise now only requires recording the establishment of their branch with local commercial authorities before beginning operations. Previously, a branch had to undergo examination and approval by the local commercial authority before they could be set up.
- The MOC now delegates examination and approval power for large projects to the provincial commercial authorities and economic and technological development zones, unless the foreign invested enterprises operates projects that require substantial state resources or involve substantial state and economic interests. Previously, foreign-invested enterprises with a total investment amount of over US$100 million were subject to the examination and approval by the MOC for their establishment or modification of their capital, drafting of company charter and rules.
TAIWAN
Internet Service Provider Liability Limitation Bill to Amend the Copyright Law
China's safe harbor law for Internet service providers ("ISP"s) has been in draft form for some time. On April 21, 2009, the Legislative Yuan completed the third reading of the draft Internet Service Provider Liability Limitation Bill ("ISP Bill"). The ISP Bill is now awaiting review by the Presidential Office. If promulgated by the President, the ISP Bill will implement the following changes to the existing Copyright Law:
- Upon discovery of online copyright infringement, copyright owners may either file legal proceedings directly, or notify the ISP operating the website with infringing content to remove the infringing content or information.
- ISPs must clearly inform users of the ISP's copyright protection regulations prior to providing service. In addition, ISPs must inform users that partial or complete termination of services will be carried out if the user is accused 3 in separate instances of infringement. ISPs that act according to the ISP bill will be exempt from civil liability for alleged infringement, or contractual liability to the alleged infringer. Internet users found to be infringing on copyrights should find the infringing content removed by the ISP. If the users do not submit a rebuttal to a copyright owner's take down notice, with a request to restore the removed content, the content should remain off the site.
Directory of Well-Known Trademarks
On March 17, 2009, the Taiwan Intellectual Property Office ("TIPO") announced that it had compiled a list of all administrative decisions, and legal judgments rendered by the civil and criminal courts where trademarks had been deemed to be well-known within the last five years. The directory will be available to enforcement agencies, industries, scholastic institutions, and should help improve the protection of well-known marks.
Some examples of well-known trademarks listed in this directory are AEROSMITH & Design, COORS, MIT, QUARK, and QUARKXPRESS.
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